EPO Practice
Oral Proceedings at the European Patent Office
A distinctive feature of European Patent Office (EPO) practice is the prevalence of hearings during examination. At the EPO, the guiding principle of the examination procedure is to grant a patent or refuse the application in as few actions as possible.1 Thus, it is common for the EPO to appoint hearings at an early stage in the examination procedure before applicants have had a sufficient opportunity (or, in some cases, any opportunity) to respond in writing to the objections raised by the examiner.
This article answers some of the most frequently asked questions regarding hearings during examination at the EPO. Whilst there are many similarities between hearings during the examination procedure and those during opposition or appeal procedures, hearings during the latter procedures have a few fundamental differences that are not discussed here.
What are Oral Proceedings?
“Oral proceedings” is the name given to a hearing at the EPO.2 The aim of oral proceedings during examination is to decide whether to grant a patent or to refuse the application.
Oral proceedings take place before a panel of examiners known as an Examining Division.3 An Examining Division has three members4: the Chairman, who is responsible for the conduct of the hearing; the First Examiner, who is usually the same examiner that handled the written phase of the examination procedure; and the Second Examiner, who takes the minutes of the hearing. All three members vote on whether to grant or refuse the application, and the fate of the application is decided by a majority vote.
Oral proceedings are held at the EPO’s premises in Munich, The Hague, or Berlin. The venue of the oral proceedings is dictated by the city in which the Examining Division is based and, as such, applicants cannot choose the venue.5, 6 Applicants may request that oral proceedings be held by video conference.7
What Should Be Done upon Receiving a Summons?
The EPO notifies applicants that oral proceedings will take place by issuing a communication entitled “Summons to attend oral proceedings pursuant to Rule 115(1) EPC” (“Summons”). The Summons states the date of the oral proceedings, together with a deadline for making written submissions and/or amendments.
It is important to realize that the issuance of a Summons indicates that the First Examiner is inclined to refuse the application.8 As such, the issuance of a Summons marks the point in the examination procedure where applicants and their attorneys must focus their efforts on overcoming all of the Examining Division’s objections. Applicants should consider what amendments might be necessary to overcome those objections and whether the resulting claim scope would have commercial value. If it seems unlikely that an acceptable claim scope could be achieved in view of the Examining Division’s objections, or if there is little likelihood of overcoming the objections at all, applicants should consider the alternatives to attending oral proceedings discussed below.
The deadline for filing amendments that is set in the Summons must be observed. The deadline cannot be extended without the agreement of the Examining Division, and amendments filed after the deadline might be disregarded.9
How Can the Claims Be Amended?
It is common to file several different sets of claims when responding to a Summons to allow a number of alternative amendments to be discussed with the Examining Division.
When filing several sets of claims, the applicant ranks each set of claims according to its desirability. The set of claims that the applicant most desires to be granted is called the “Main Request.” The remaining sets of claims are typically called the “First Auxiliary Request,” “Second Auxiliary Request,” “Third Auxiliary Request,” and so on. In general, the independent claims of the various Requests have a progressively narrower scope, with the independent claims of the Main Request having the broadest scope and those of the lowest-ranking Auxiliary Request having the narrowest scope. The Requests will be examined in turn until the Examining Division finds a set of claims it considers to be allowable, or until all of the sets of claims have been refused.
The usual considerations for claim amendments apply to the Main and Auxiliary Requests. In particular, the amendments must be directly and unambiguously derivable from the content of the application as originally filed,10 and the amended claims must relate to subject matter that has been searched.11 If amendments are filed after the deadline set in the Summons, there is an additional requirement that the amended claims should not diverge from the claims already filed.12 That is, any late-filed Auxiliary Requests should focus upon a single invention, and should not branch out in different directions.
There is no formal limit on the number of Auxiliary Requests that may be filed. Between one and four Auxiliary Requests is usually a good number, depending on the complexity of the application. The filing of a large number of Auxiliary Requests may be regarded as an abuse of procedure.
Applicants should ensure that the Requests collectively include every set of claims that they may wish to pursue on appeal, should the application be refused. It may be difficult to introduce entirely new sets of claims during appeal proceedings, if those claims were not considered by the Examining Division.13 Thus, if the applicant wishes to pursue on appeal claims that were filed earlier in the examination procedure, but later withdrawn (including the claims of the application as originally filed), such claims should be included in one of the Requests.
Is It Necessary for Written Submissions to Contain Detailed Arguments?
The level of detail contained in the written submissions is a matter of personal preference. Some attorneys prefer to make few arguments in the written submissions and reserve detailed arguments for the oral proceedings. Other attorneys prefer to include detailed arguments in the written submissions.
The author’s preference is for written submissions to contain a similar level of detail as would be included in a response to an office action during the written phase of examination. This approach often allows many of the Examining Division’s objections to be overcome in advance of the oral proceedings and, in some cases, can avoid the need for oral proceedings to take place.
Is It Worth Attending Oral Proceedings?
There is no obligation to attend oral proceedings. Oral proceedings can sometimes provide a good opportunity to overcome objections that have been raised during examination, or to present arguments that cannot easily be expressed in writing or that might create an estoppel in other jurisdictions if made in writing. Oral proceedings can also allow attorneys to explore the allowability of various amendments with the Examining Division.
In many cases, however, the Examining Division’s objections are so entrenched that they cannot be overcome at oral proceedings. In such cases, attendance at oral proceedings is futile. It is advisable for an applicant’s attorney to telephone the First Examiner after filing the written submissions in order to find out whether any objections remain and to gauge the likelihood of success at oral proceedings.
What Are the Alternatives to Attending?
One alternative to attending oral proceedings is to request a written decision on the claims that are currently on file. Such a decision will typically be a decision to refuse the application. The advantage of requesting a written decision is that it can be appealed in the same way as a decision pronounced during oral proceedings, but the costs of attending oral proceedings are not incurred.
Another alternative is to withdraw the application. This course of action will avoid a decision to refuse the application being taken, which may be advantageous when the European application has counterparts in other jurisdictions.
A third alternative is to file a divisional application. Filing a divisional application may be necessary where the only way to overcome the Examining Division’s objections would be to amend the claims in such a manner that they are directed to subject matter that has not been searched, or if there is a desire to pursue claims that were considered to lack unity of invention with the claims that are currently under examination. This option can also allow applicants to have another go at prosecution, although the EPO regards the filing of divisionals for this purpose as an abuse of procedure.
What Happens at Oral Proceedings?
Oral proceedings involve a detailed discussion about the Examining Division’s objections to the application. It is common for new objections to be raised during the course of discussion, and it is even known for new prior art to be cited for the first time at oral proceedings. Likewise, it is common for new amendments to be filed during the oral proceedings, either in response to new objections or to existing objections being better articulated. Hence, it is vital for applicants’ attorneys to prepare their cases thoroughly in order that they can respond to whatever objections are raised.
The manner in which oral proceedings are conducted depends upon the personalities of the members of the Examining Division and the strength of the applicant’s case. In some cases, the Examining Division will collaborate with the applicant’s attorney to find an allowable set of claims. In other cases, the Examining Division will allow the applicant its right to be heard,14 but its members will already have made up their minds to refuse the application.
Oral proceedings conclude with the Examining Division indicating its intention to grant a patent or pronouncing a decision to refuse the application. If the Examining Division intends to grant the application, a written communication (“Communication under Rule 71(3) EPC”) will be issued. On the other hand, if the Examining Division decides to refuse the application, a written decision containing the reasons for refusal will be issued.
Should the Inventors or In-House Counsel Attend?
Oral proceedings are usually attended by the applicant’s European patent attorney alone. There is generally no need for the inventors, in-house counsel, or other representatives of the applicant to attend. If the inventor or any other person accompanying the European patent attorney intends to make submissions during oral proceedings, the Examining Division’s permission should be sought in advance.
One instance where it may be helpful for the inventor to attend oral proceedings is in cases involving particularly complex technology or where the common general knowledge of the skilled person is at issue.
What Happens If the Application Is Refused?
There are two options if the Examining Division decides to refuse the application: appeal the decision, or take no further action. If the decision is appealed, it will be reviewed by a Board of Appeal15. It is quite common for the Boards of Appeal to set aside decisions of the Examining Divisions16. However, a large backlog of cases before the Boards of Appeal means that it typically takes at least three years before an appeal is considered.
1 “How to get a European patent” (EPO, 14th ed., Oct. 2013, ¶ 162). See also Guidelines for Examination in the European Patent Office (Nov. 2014, Part C, Chapter IV-3).
2 Art. 116 EPC.
3 Art. 18 EPC.
4 In rare cases, a legally qualified examiner may supplement the three technically qualified examiners that normally make up the Examining Division.
5 See, e.g., Board of Appeal Decision T 1012/03.
6 In the early days of the EPO, oral proceedings took place only in Munich. However, the number of hearings held in The Hague and Berlin is now comparable to the number of hearings held in Munich. Thus, there is no advantage in selecting European counsel based solely upon their proximity to a particular city in which the EPO is based.
7 Official Journal of the EPO ( May 2012, p. 354); Guidelines for Examination in the European Patent Office (Nov. 2014, Part E, Chapter II-11).
8 Although a Summons is issued by the Examining Division as a whole, the Chairman and Second Examiner often do not consider the case in detail until shortly before oral proceedings.
9 Rule 116(1) EPC.
10 Art. 123(2) EPC.
11 Rule 137(5) EPC.
12 Guidelines for Examination in the European Patent Office (Nov. 2014, Part H, Chapter III-3.3.1.2).
13 See, e.g., Board of Appeal Decision T 569/08.
14 Art. 113 EPC.
15 Art. 21 EPC.
16 According to the EPO’s Annual Report for 2013, the Boards of Appeal allowed 288 appeals against Examining Divisions’ decisions and dismissed 302 such appeals, whilst a further 423 such appeals were otherwise settled.
